Case IPR2016-01261
`Patent 8,457,113
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`Paper No. 51
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`BRIGHT HOUSE NETWORKS, LLC
`WIDEOPENWEST FINANCE, LLC
`KNOLOGY OF FLORIDA, INC.
`BIRCH COMMUNICATIONS, INC.
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`Petitioner
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`v.
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`FOCAL IP, LLC,
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`Patent Owner
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`________________
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`Case IPR2016-01261
`Patent Number: 8,457,113 B2
`________________
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`PATENT OWNER FOCAL IP, LLC’S OPPOSITION TO
`PETITIONERS’ MOTION TO EXCLUDE
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`Patent 8,457,113
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`Paper No. 51
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`BRIGHT HOUSE NETWORKS, LLC
`WIDEOPENWEST FINANCE, LLC
`KNOLOGY OF FLORIDA, INC.
`BIRCH COMMUNICATIONS, INC.
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`Petitioner
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`v.
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`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
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`Case IPR2016-01261
`Patent Number: 8,457,113 B2
`________________
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`PATENT OWNER FOCAL IP, LLC’S OPPOSITION TO
`PETITIONERS’ MOTION TO EXCLUDE
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`Case IPR2016-01261
`Patent 8,457,113
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`Patent Owner Focal IP, LLC respectfully submits this opposition to
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`Paper No. 51
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`Petitioners’ Motion to Exclude filed on August 21, 2017.
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`I.
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`EXHIBIT 2070 SHOULD NOT BE EXCLUDED.
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`Petitioners argue that Exhibit 2070 should be excluded because (1) Mr.
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`Bates’s opinions are unreliable and unhelpful to the Board, and (2) Mr. Bates’s
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`opinions go beyond the proper scope of reply. Paper No. 50 at 1-9. Petitioners are
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`wrong on both counts. Petitioners appear to be using their motion to file an improper
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`surreply and an improper motion to strike. The Court should deny Petitioners’
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`motion for this reason alone. Moreover, Mr. Bates’s opinions are reliable and
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`helpful, and his opinions are all proper rebuttal testimony. Exhibit 2070 is therefore
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`admissible.
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`A.
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`Petitioners’ Motion is an Improper Surreply in Disguise
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`The Board should deny Petitioners’ motion to exclude Exhibit 2070 because
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`it is merely a surreply in disguise. Petitioners argue that Mr. Bates’s opinion is
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`premised on the understanding that Petitioners have the burden to prove the
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`unpatentability of proposed substitute claims. Paper No. 50 at 5-6. Petitioners argue
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`that Mr. Bates’s “error” has caused him to now argue that limitations are missing
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`from the prior art that he did not discuss in connection with the motion to amend.
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`Id. at 5. In support of this argument, Petitioners improperly reiterate their arguments
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`in opposition to the motion to amend, cite to Mr. Bates’s deposition testimony in
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`Patent 8,457,113
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`connection with a previous declaration, and point to various portions of Mr. Bates’s
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`Paper No. 51
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`reply declaration that are allegedly inconsistent with the motion to amend and Mr.
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`Bates’s prior testimony. Id. at 5-8. In short, Petitioners are attempting to use the
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`motion to exclude as another opportunity to argue the merits. This is not proper.
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`Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00002, Paper No.
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`66 at 62 (P.T.A.B. Jan. 23, 2014) (“While a motion to exclude may raise issues
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`related to admissibility of evidence, it is not an opportunity to file a sur-reply, and
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`also is not a mechanism to argue that a reply contains new arguments or relies on
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`evidence necessary to make out a prima facie case.”). Petitioners should have either
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`sought to file a surreply or deposed Mr. Bates in connection with his reply
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`declaration and filed a motion for observations on cross-examination. They did
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`neither. The Board should therefore deny Petitioners’ motion because it seeks to
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`circumvent the rules.
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`B.
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`Petitioners’ Motion is an Improper Attempt to Strike Patent
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`Owner’s Reply.
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`Petitioners also argue that Mr. Bates’s opinion is inadmissible because he
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`introduces new opinions and arguments that he could have included in his original
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`declaration in support of the motion to amend. Paper No. 50 at 8-9. While
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`Petitioners have couched their argument as an attack on the admissibility of Mr.
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`Bates’s testimony, it is really an attack on the arguments in the reply itself. Motions
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`to exclude are not the proper vehicles for challenging the scope of arguments in
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`Paper No. 51
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`replies. See Vibrant Media, Inc. v. General Elec. Co., IPR2013-00170, Paper No.
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`56 at 31 (P.T.A.B. June 26, 2014) (“A motion to exclude is not a mechanism to
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`argue that a reply contains new arguments or relies on evidence necessary to make
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`out a prima facie case.”); BlackBerry Corp. v. Zipit Wireless, Inc., IPR2014-01508,
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`Paper No. 49 at 40 (P.T.A.B. Mar. 29, 2016) (“As an initial matter, a motion to
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`exclude is not a proper vehicle for a party to raise the issue of arguments exceeding
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`the scope of a reply.”).
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`Moreover, the challenged portions of Mr. Bates’s reply declaration are proper
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`rebuttal testimony. Paragraphs 44-45, 47, and 50-51 are about Lewis and LaPier.
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`Ex. 2070, ⁋⁋ 44-45, 47, 50-51. Lewis and LaPier were not brought to Patent
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`Owner’s attention until Petitioners filed their opposition to Patent Owner’s motion
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`to amend. Mr. Bates therefore could not have included testimony about Lewis and
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`LaPier until his reply declaration. Paragraph 54 is Mr. Bates’s explanation of why
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`the proposed substitute claim is not obvious even in light of Petitioners’ arguments.
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`Ex. 2070, ⁋ 54. And while paragraph 42 is about Archer, it is directly responsive to
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`Petitioners’ argument that Patent Owner has not attributed patentability to when the
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`first and second calls are connected. Id., ⁋ 42; see also Paper No. 35 (Petitioners’
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`opposition to motion to amend) at 25. Moreover, as paragraph 42 indicates, Patent
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`Owner argued in its motion that Archer discloses that a first call request is answered
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`prior to processing a second call request across the packet network. Ex. 2070, ⁋ 42
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`Paper No. 51
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`(citing Mot. at 18, 25). The Board therefore should not exclude Exhibit 2070.
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`Neither of the cases Petitioners cite support a contrary conclusion. In The
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`Scotts Company LLC v. Encap, LLC, the Board excluded a second reply declaration
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`because the majority of it was in support of the motion to amend instead of the reply.
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`IPR2013-00110, Paper No. 79 at 6-8 (P.T.A.B. June 24, 2014). In Veeam Software
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`Corp. v. Symantec Corp., the Board expunged expert declarations after a party
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`requested to file a motion to strike, finding that the declarations included testimony
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`that was not proper rebuttal testimony. IPR2013-00141, Paper No. 35 at 3-5
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`(P.T.A.B. Apr. 7, 2014). Here, Mr. Bates’s declaration is proper rebuttal testimony,
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`and instead of following the proper procedure by seeking to file a motion to strike,
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`Petitioners improperly filed a motion to exclude. The Board therefore should not
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`exclude Exhibit 2070.
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`C.
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` Exhibit 2070 is Admissible Under Rules 403, 702, and 703.
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`Petitioners argue that Exhibit 2070 is inadmissible under Rules 403, 702, and
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`7031 because (1) it relies on an incorrect legal standard, and (2) Mr. Bates fails to
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`1 Petitioner also states that Mr. Bates’s opinions should be excluded under 37
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`C.F.R. § 42.20(c). This regulation merely states that a party that files a motion has
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`address combinations of the prior art of record and prior art known to the patent
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`Paper No. 51
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`owner. Petitioners are wrong.
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`Mr. Bates did not rely on an incorrect legal standard. Petitioners have not
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`cited anything in Mr. Bates’s declaration stating that Petitioners have the burden in
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`connection with motions to amend. Petitioners instead cite to portions of Patent
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`Owner’s reply in support of its motion to amend and a number of paragraphs of Mr.
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`Bates’s reply declaration that allegedly demonstrate that that Mr. Bates’s opinions
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`were premised on Patent Owner’s view of the law. Paper No. 50 at 5-8. While
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`Patent Owner believes that Petitioners should have the burden of proving
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`unpatentability of proposed substitute claims2, this belief has no bearing on the
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`the burden of proof to establish its entitlement to the requested relief. It is not an
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`independent basis to exclude Mr. Bates’s opinions.
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`2 Patent Owner believes that it should prevail regardless of who has the burden
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`of proving patentability or unpatentability of proposed substitute claims. Patent
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`Owner recognizes that, under current law, Patent Owner bears the burden of proving
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`patentability of proposed substitute claims. Patent Owner however wishes to
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`preserve the argument that Petitioners bear the burden of proving unpatentability in
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`admissibility of Mr. Bates’s opinion. Mr. Bates’s opinions are premised on the
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`Paper No. 51
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`correct legal standards of anticipation and obviousness. Furthermore, the portions
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`of Mr. Bates’s testimony that Petitioners quote are Mr. Bates’s opinions about what
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`the prior art discloses or are merely factual statements about what Petitioners did or
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`did not discuss in their opposition. And in all of those paragraphs, Mr. Bates
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`affirmatively states his opinion as to the claim limitation at issue.3 See, e.g., Exhibit
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`the event that the Federal Circuit changes the law in In re Aqua Products, Inc., Case
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`No. 2015-1177 (Fed. Cir.).
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`3 Petitioners also cite, without discussing, paragraphs 32 and 55. Paper No.
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`50 at 5. Paragraph 32 is merely an introductory paragraph in which Mr. Bates states
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`his opinion that the proposed substitute claim is patentable and notes that Petitioners
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`failed to discuss several references or set forth any arguments regarding obviousness.
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`Paragraph 55 is a paragraph in conclusion that states, in total, “Given the foregoing,
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`the invention as described in the Substitute Claim is patentable.”
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`2070, ⁋⁋ 42, 44, 45, 50, 51, 54. 4 Mr. Bates’s opinion therefore was not premised on
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`Paper No. 51
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`an incorrect legal standard.
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`Mr. Bates also did not fail to consider combinations of prior art references.
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`Mr. Bates explained why he believed that the proposed substitute claim would not
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`have been obvious (and, therefore, why it would not have been obvious to combine
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`references). Ex. 2070, ⁋ 54; see also Ex. 2040, ⁋⁋ 144-151. Moreover, Petitioners’
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`argument is not an argument about the admissibility of Mr. Bates’s opinion, but an
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`argument about the weight it should be afforded. The Board should deny
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`Petitioners’ motion to exclude Exhibit 2070.
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`II. EXHIBIT 2011 SHOULD NOT BE EXCLUDED.
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`Petitioners argue that Exhibit 2011 should be excluded under Rules 402 and
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`403 because Patent Owner does not rely on it in Patent Owner’s response. Exhibit
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`2011 was introduced as an exhibit at the deposition of Dr. La Porta, Petitioners’
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`expert. Ex. 2020 at 214:23-215:10. Dr. La Porta’s deposition transcript was filed
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`4 Petitioners state that a number of quotes are from paragraph 51 when they
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`are in fact from paragraph 54.
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`as an exhibit in full. Exs. 2019-2020. Exhibit 2011, as an exhibit at that deposition,
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`Paper No. 51
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`was accordingly also filed.
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`Exhibit 2011 is an expert declaration from Dr. Eric Burger, Petitioners’ expert
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`in the related district court proceeding, where Dr. Burger expresses his opinions on
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`how the claims at issue—including the claims of the challenged patent—should be
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`construed. See Ex. 2011, passim. The positions regarding claim construction that
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`Petitioners and its expert have taken in parallel proceedings are relevant and non-
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`prejudicial to Petitioners. For at least these reasons, Exhibit 2011 should not be
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`excluded under Rules 402 or 403.
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`III. EXHIBITS 2021, 2024, 2025, 2027-2030, AND 2065 SHOULD NOT BE
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`EXCLUDED.
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`Petitioners argue that Exhibits 2021, 2024, 2025, 2027-2030, and 2065 should
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`be excluded under Rules 106, 403, and 1006 because (1) they are incomplete
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`transcripts and submissions of witnesses and entities from other cases and (2) Patent
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`Owner’s reference to or reliance on these exhibits is out of context. Paper No. 50 at
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`11-12. None of these rules support exclusion of these exhibits.
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`Rule 106 does not provide a basis for excluding Exhibits 2021, 2024, 2025,
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`2027-2030, and 2065. Rule 106 states: “If a party introduces all or part of a writing
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`or recorded statement, an adverse party may require the introduction, at that time,
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`of any other part—or any other writing or recorded statement—that in fairness ought
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`to be considered at the same time.” Fed. R. Evid. 106. Thus, at most, Rule 106
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`Paper No. 51
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`would allow Petitioners to seek the admission of other portions of documents they
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`contend are incomplete. Indeed Petitioners have already introduced the full
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`transcript of Mr. Willis’s deposition and relied on a portion of it in their reply. See
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`Ex. 1061 (Willis deposition transcript); Paper No. 34 at 12. But they have chosen
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`not to introduce other portions of the exhibits they now challenge, either in their
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`reply, opposition to Patent Owner’s motion to amend, or here. Exhibits 2021, 2024,
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`2025, 2027-2030, and 2065 therefore should not be excluded under Rule 106.
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`Rule 1006 also does not provide a basis for excluding Exhibits 2021, 2024,
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`2025, 2027-2030, and 2065. Rule 1006 merely allows a party to “use a summary,
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`chart, or calculation to prove the content of voluminous writings, recordings, or
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`photographs that cannot be conveniently examined in court,” and requires the party
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`to make the originals available for examination or copying and, if ordered by the
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`court, to produce the originals in court. Fed. R. Evid. 1006. But Exhibits 2021,
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`2024, 2025, 2027-2030, and 2065 are not summaries, charts, or calculations, but
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`excerpts of petitions, declarations, and deposition transcripts. Rule 1006 therefore
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`does not apply.
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`Finally, Exhibits 2021, 2024, 2025, 2027-2030, and 2065 should not be
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`excluded under Rule 403. Notably, Petitioners have not argued that these exhibits
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`are irrelevant, but only that they confuse the issues, waste time, and are prejudicial
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`to Petitioners. Paper No. 50 at 11-12. According to Petitioners, Patent Owner relies
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`Paper No. 51
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`on these exhibits out of context of the rest of the testimony and the documents. Id.
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`For example, Petitioners argue that “none of these excerpts involved testimony
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`regarding interconnecting two different types of networks (such as an IP network
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`and a circuit switched network) like the prior art of record in this proceeding.” Id.
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`at 12. This is an argument about the weight to be given to the evidence, not about
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`the admissibility of the evidence. The proper time for such arguments was in
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`Petitioners’ reply. These exhibits are used in a non-confusing manner to illustrate
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`the state of the art and the opinions of other experts, which Patent Owner and its
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`expert rely upon to support their analysis. The Board should not exclude Exhibits
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`2021, 2024, 2025, 2027-2030, and 2065 under Rule 403.
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`IV. EXHIBIT 2041 SHOULD NOT BE EXCLUDED
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`Petitioners argue that the Board should exclude Exhibit 2041 because it does
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`not comply with the Board’s order providing guidance on Patent Owner’s motion to
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`amend (Paper No. 29). Paper No. 50 at 12-13. According to Petitioners, the Board
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`only allowed Exhibit 2041 to contain citations and text of the specification showing
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`written description support, but the exhibit contained additional briefing and
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`argument. Id. at 13. Petitioners mischaracterize the facts.
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`Exhibit 2041 does not run afoul of the Board’s order. In its order, the Board
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`authorized Patent Owner to show written description support for the proposed
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`Patent 8,457,113
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`substitute claim in an appendix. Paper No. 29 at 3. The Board stated that “Patent
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`Paper No. 51
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`Owner should not include in its appendix any argument or characterizations in
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`support of written description” and that “Patent Owner may reproduce only exact
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`text of the specification alongside the corresponding citations.” Id. Exhibit 2041
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`fully complies with this order. Indeed, in addition to the claim language, the charts
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`consist of only exact text of the specification and corresponding citations. The first
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`page of Exhibit 2041 contains factual information regarding the parent applications
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`that provide written description support. An appendix illustrating the written
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`description support requires a factual introduction as to the applications that are
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`referenced in the subsequent claim charts for the appendix to be comprehended.
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`Exhibit 2041 does not contain any argument or characterizations. The Board
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`therefore should not exclude Exhibit 2041.
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`V.
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`PETITIONERS’ MOTION SHOULD BE DENIED BECAUSE IT
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`VIOLATES THE RULES.
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`Finally, in addition to being an improper attempt to file a surreply, an
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`improper attempt to file a motion to strike, an improper application of the law, or a
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`mischaracterization of the facts, Petitioners’ motion does not comply with the rules.
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`A motion to exclude “must identify the objections in the record in order.” 37 C.F.R.
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`§ 42.64(c) (emphasis added). The Office Patent Trial Practice Guide requires that
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`“[a] motion to exclude evidence must: … [a]ddress objections to exhibits in
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`Patent 8,457,113
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`numerical order.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
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`Paper No. 51
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`48767 (Aug. 14, 2012). Petitioners’ motion does not address the objections to
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`exhibits in numerical order. In fact, it addresses Exhibit 2070, the last exhibit it
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`challenges, first. Petitioner’s objections to other exhibits are also out of sequence
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`(e.g., Exhibit 2065 is addressed before Exhibit 2041). The Board should deny
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`Petitioners’ motion for these reasons alone.
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`Dated: August 28, 2017
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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`Case IPR2016-01261
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`Paper No. 51
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 28th day of August 2017, a copy of Patent Owner
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`FOCAL IP, LLC’s Opposition to Motion to Exclude has been served in its entirety
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`via email on the following:
`
`Wayne Stacy
`BAKER BOTTS L.L.P.
`2001 Ross Avenue
`Dallas, TX 75201
`Phone: (214) 953-6678
`Facsimile: (214) 661-4678
`wayne.stacy@bakerbotts.com
`
`Sarah J. Guske
`BAKER BOTTS L.L.P.
`101 California Street, #3070
`San Francisco, CA 94111
`Phone: (415) 291-6205
`Facsimile: (415) 291-6305
`sarah.guske@bakerbotts.com
`
`May Eaton
`BAKER BOTTS L.L.P.
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7520
`Facsimile: (650) 739-7620
`may.eaton@bakerbotts.com
`
`Patrick McPherson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-5214
`Fax: 202-776-7801
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`Patent 8,457,113
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`PDMcPherson@duanemorris.com
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`Christopher Tyson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-7851
`Fax: 202-776-7801
`CJTyson@duanemorris.com
`
`Kyle Lynn Elliott
`Spencer Fane LLP
`1000 Walnut, Suite 1400
`Kansas City, MO 64106
`Tel: 816-292-8150
`Fax: 816-474-3216
`sfbbaction@spencerfane.com
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`Dated: August 28, 2017
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`Paper No. 51
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`Respectfully submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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`14
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